Royalty Report: Drugs, Diagnostic, Drug Discovery – Collection: 274908

License Grant

The German Licensor, a non-profit scientific research organisation, grants to Israeli Company during the Term a co-exclusive, worldwide, royalty-bearing license under the MPG Patent Rights to develop, have developed, make, have made, use, have used, import, have imported, sell and have sold Licensed Products, and to perform, have performed, sell and have sold Licensed Services, each in the Field.

In order to establish co-exclusivity, Licensor shall not grant, during the Term, more than three other co-exclusive licenses to the MPG Patent Rights in the Field with the scope as set forth (hereinafter the “Other Diagnostic Licenses”, or the 'Other Diagnostic Licensees', as applicable).

License Property

The license is to use its microRNAs, including approximately 110 biologically validated human microRNAs, for diagnostic applications.

Licensed Products shall mean any product (I) that, or the development, manufacture, use or sale of which, absent the license granted hereunder, would infringe one or more Pending Claims or Valid Claims of the MPG Patent Rights, or (ii) which is developed or manufactured by using a Licensed Process or that, when used, practices a Licensed Process.

MPG Patent Rights shall mean:  (Max-Planck-Gesellschaft zur Foerderung der Wissenschaften e.V. (hereinafter “MPG“), a German non-profit scientific research organisation)
(a)  
the patent applications filed by MPG listed, and the resulting patents,
(b)  
any subsequent patent applications in any jurisdiction claiming the same priority date and directed to the same subject matter as the patent application listed, and any divisionals, continuations, continuation-in-part applications, and continued prosecution applications (and their relevant international equivalents) of the patent applications listed, and the resulting patents, and
(c)  
any patents resulting from reissues, reexaminations (and their relevant international equivalents) of the patents described in (a) and (b) above.
International Patent applications filed by MPG entitled 'Small expressed RNA molecules (MicroRNA molecules)'

Licensed Service shall mean any service (I) that, or the performance or sale of which, absent the license granted hereunder, would infringe one or more Pending Claims or Valid Claims of the MPG Patent Rights, or (ii) which, when performed, uses a Licensed Process or a Licensed Product.

Field of Use

Field shall mean sale and use of Licensed Products, or performance and sale of Licensed Services, for:
(a) Companys internal and collaborative research and development purposes, and
(b) Diagnostic Purposes, specifically excluding any sale and use of Licensed Products, or performance and sale of Licensed Services, for Research Purposes or for Therapeutic Purposes.

License Grant

Licensor, a University, hereby grants to Company and its affiliates for the term (a) a royalty-bearing license under the Patent Rights to develop, make, have made, use, sell, offer to sell, lease, and import Licensed Products in the field in the territory and to develop and perform Licensed Processes in the field in the territory;  (b) a royalty-bearing license to use the tangible property to develop, make, have made, use, sell, offer to sell, lease and import Licensed Products in the field in the territory and to develop and perform Licensed Processes in the field in the territory.

License Property

Licensed Product shall mean any product or part thereof that: (i)  absent the license granted hereunder, would infringe one or more valid claims of the Patent Rights; or  (ii) is manufactured by using a Licensed Process or that, when used, practices a Licensed Process.

Patent Rights shall mean: (a) the United States and international patents listed.
US Patent Application #10/108,195 titled Methods and Products related to FGF Dimerization
(b) the United States and international patent applications and/or provisional applications listed and the resulting patents;  (c) any patent applications resulting from the provisional applications listed, and any divisionals, continuations, continuation-in-part applications, and continued prosecution applications (and their relevant international equivalents) of the patent applications listed and of such patent applications that result from the provisional applications listed, to the extent the claims are directed to subject matter specifically described in the patent applications listed, and the resulting patents;  (d) any patents resulting from reissues, reexaminations, or extensions (and their relevant international equivalents) of the patents described in (a), (b), and (c) above; and (e) international (non-United States) patent applications and provisional applications filed after the effective date and the relevant international equivalents to divisionals, continuations, continuation-in-part applications and continued prosecution applications of the patent applications to the extent the claims are directed to subject matter specifically described in the patents or patent applications referred to in (a), (b), (c), and (d) above, and the resulting patents.

Licensed Process shall mean any process that, absent the license granted hereunder, would infringe one or more valid claims of the Patent Rights or which uses a Licensed Product.

United States Patents and Applications
M.I.T. Case No. 9265
'A Novel Fibroblast Growth Factor Dimer'

International (non-U.S.) Patents and Applications
M.I.T. Case No. 9265
'A Novel Fibroblast Growth Factor Dimer'

WO Patent Application Serial No US02/09517, Filed on March 27, 2002
Entitled: METHODS AND PRODUCTS RELATED TO FGF DIMERIZATION

Field of Use

Field shall mean human therapeutics for the treatment of neurological disorders and conditions, which shall include disorders and conditions pertaining to the central nervous, peripheral nervous, autonomic nervous, and neuromuscular systems.

patents pertain to a novel molecule for treatment of neurological disorders, including stroke.

License Grant

The German Licensor grants the Israeli Licensee a co-exclusive, worldwide, royalty-bearing license under the Licensed Patent Rights to develop, have developed, make, have made, use, have used, import, have imported, sell and have sold Licensed Products, and to perform, have performed, sell and have sold Licensed Services, each in the Field.

In order to establish co-exclusivity, Licensor shall not grant, during the Term, more than three other co-exclusive licenses to the Licensed Patent Rights in the Field with the scope of Other Diagnostic Licenses, or the Other Diagnostic Licensees.

Licensee shall have the right to grant sublicenses.

License Property

Diagnostic kits shall be considered as Licensed Products.

The Platform Technologies shall mean any technology for qualitative and/or quantitative detection or quantification of nucleic acids and genotyping used in the performance of a Licensed Service or offered as part of a Licensed Product, including, without limitation, RNA extraction and/or PCR technologies, including, without limitation, realtime based, microarray technologies, or any current or future technology providing substantially similar results.by any means.

Patents filed are for Small expressed RNA molecules (MicroRNA molecules).

Analyte Specific Reagents or ASRs shall mean antibodies, both polyclonal and monoclonal, specific receptor proteins, ligands, nucleic acid sequences, and similar reagents which, through specific binding or chemical reaction with substances in a specimen, are intended for use in a diagnostic application for identification and quantification of an individual chemical substance or ligand in biological specimens. ASRs that otherwise fall within this definition shall not fall within this definition when they are sold to in vitro diagnostic manufacturers for the purpose of manufacturing in vitro diagnostic products, or organizations that use the reagents to make tests for purposes other than providing diagnostic information to patients and practitioners, e.g., forensic, academic, research, and other non-clinical laboratories.

Field of Use

The Field shall mean sale and use of Licensed Products, or performance and sale of Licensed Services, for Licensees internal and collaborative research and development purposes, and Diagnostic Purposes, specifically excluding any sale and use of Licensed Products, or performance and sale of Licensed Services, for Research Purposes or for Therapeutic Purposes.  This agreement is to develop and commercialize products and services for Diagnostic Purposes.

The licensed microRNAs sequences will be added to Licensee microRNA database, providing the company with additional biomarker candidates for its diagnostic development programs.  Under the terms of the agreement, Licensee will be able to use these microRNAs to advance multiple research and development programs targeting new microRNA-based diagnostic tools for a variety of diseases.

License Grant

Licensor, a non-profit institution, hereby grants to Licensee and its Affiliates a worldwide, non-exclusive license, under Licensor Know-How and Licensed Patents (I) for all internal research and development purposes, including without limitation, the right to make, use and import Licensor Know How and inventions claimed in the Licensed Patents and (ii) to develop, make, use, market, sell, offer for sale, export and import, in the Field of Use, Licensed Products, including without limitation those covered by Valid Claims in the Licensed Patents.

License Property

Intellectual property relates to the induction of gene silencing in mammalian cells through RNAi.

RNA interference, or RNAi, is a naturally occurring mechanism within cells for selectively silencing specific genes, an ability that could become the basis for a whole new class of therapeutic products. The discovery of RNAi has been heralded by many as a major breakthrough, and the journal Science named RNAi the top scientific achievement of 2002 as well as one of the top ten scientific advances of 2003. Because many diseases are caused by the inappropriate activity of specific genes, the ability to silence such genes selectively through RNAi could provide a means to treat a wide range of human diseases.

Licensed Patents means the U.S. Patent Applications listed below and any divisions, continuations, reissues, reexamines, extensions and continuations-in-part applications thereof and any patents issuing thereto; and any and all foreign patents, foreign applications, extensions and supplemental protection certificates or patent applications corresponding thereto having the Principal Investigator as an inventor and claiming the same priority date as a parent application.

Licensor Patents
Serial No.                  Type      Tite                                                                                       Date            Filed Status
PCT/US01/08435      PCT      Methods and Compositions for RNA Interference       3/16/01       Published
09/858,862                CIP       Methods and Compositions for RNA Interference       5/16/01       Pending
09/866,551                CIP       Methods and Compositions for RNA Interference       5/24/01       Pending
10/055,797                CIP       Methods and Compositions for RNA  Interference      1/22/02       Pending

Licensed Product means any product, including but not limited to any lyophilized liquid, sustained release or aerosolized formulation or other formulation, or process for which Licensee, or its Affiliate has received FDA Approval and/or Regulatory Approval, which is made through the use of Licensor Know-How or falls within the scope of a Valid Claim of a Licensed Patent.

Field of Use

The field of Use means all therapeutic uses in humans, including without limitation the diagnosis, prevention and treatment of diseases or conditions and all other healthcare applications. Field of Use shall not include research reagent sales.